Duke University v. Brendan Ward / Treats
Claim Number: FA1805001788173
Complainant is Duke University (“Complainant”), represented by Susan Freya Olive of Olive & Olive, P.A., North Carolina, USA. Respondent is Brendan Ward / Treats (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duke-trinity.org>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2018; the Forum received payment on May 23, 2018.
On May 24, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <duke-trinity.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@duke-trinity.org. Also on May 25, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it uses its DUKE TRINITY mark to promote its products and services related to its business as a major university. Complainant established rights in its DUKE mark through registration in the United States in 1996. Further, Complainant has common law rights in the DUKE TRINITY mark. Complainant’s rights to TRINITY date back to 1859 when the institution now known as Duke University began operating as Trinity College. In 1924, the overall university became known as Duke University, and Trinity College became the name of the undergraduate college. As a result, the marks DUKE and TRINITY are often used in combination. Since at least as early as 2007, the homepage for Complainant’s Trinity College of Arts & Sciences has been located at <trinity.duke.edu> and has been continuously in use. The domain name <trinity.duke.edu> contains the marks DUKE and TRINITY, and offers and promotes the educational goods and services of Complainant’s Trinity College of Arts & Sciences. The homepage prominently displays the college’s logo, which is a DUKE mark combined with the TRINITY College of Arts & Sciences word mark. Complainant has prominently and extensively used, promoted and advertised the DUKE, TRINITY, and DUKE TRINITY marks and millions of consumers are regularly exposed to the marks by close personal interaction with them. By virtue of these efforts, the marks have become well recognized by consumers, designating Complainant as the source of educational services and of the additional goods and services with which the marks have been used.
Complainant alleges that the disputed domain name is identical to Complainant’s DUKE TRINITY mark because it merely adds a hyphen and the generic top-level domain (“gTLD”) “.org.”
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its DUKE TRINITY mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Brendan Ward / Treats” as the registrant. Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent previously used the domain name to resolve to Complainant’s own website, and currently, the domain name resolves to an inactive webpage. Additionally, Respondent has used the disputed domain name to carry out a phishing scheme by sending e-mails to individuals at other universities and at businesses, using the e-mail address “name”@duke-trinity.org, purporting to have information of interest to the recipient and asking for personal information concerning the recipient in order to set up a call. Some recipients responded to these e-mails and set up a time to speak. They were not, however, able to speak with the purported sender of the e-mail and instead were diverted to a sales person promoting services unrelated to Complainant.
According to Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent registered the domain name with full knowledge of Complainant’s rights in the mark. Further, Respondent uses the disputed domain name to pass off as Complainant to conduct an e-mail phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the mark DUKE TRINITY and uses it to market educational and related products and services.
Complainant’s rights in its mark date back to at least 2007.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain to carry out a fraudulent phishing scheme. The disputed domain name originally resolved to Complainant’s own website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has used its DUKE TRINITY mark in connection with educational services since 1924 and has used it for its online presence since at least 2007, when Complainant registered the domain name <trinity.duke.edu>. Thus Complainant has common law rights in the DUKE TRINITY mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Accordingly, the Panel finds that that Complainant has established rights in its DUKE TRINITY mark pursuant to Policy ¶ 4(a)(i).
The disputed domain name is identical to Complainant’s DUKE TRINITY mark because it merely adds a hyphen and the gTLD “.org.” The addition of a hyphen and gTLD do not sufficiently distinguish a domain name from a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Complainant has not licensed or otherwise authorized Respondent to use its DUKE TRINITY mark in any fashion. Respondent is not commonly known by the disputed domain name. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Further, under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the disputed domain name lists “Brendan Ward / Treats” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent previously used the disputed domain name to resolve to Complainant’s own website. Use of a domain name to resolve to a complainant’s own website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). This is particularly the case here, given that the disputed domain name was used for a phishing scheme, see below. Therefore, the Panel finds that Respondent failed to use the domain name for a bona fide offering or fair use under the Policy.
Respondent uses e-mail addresses containing the disputed domain name to pass off as Complainant and lure recipients into providing personal information so that they can receive a call attempting to sell products and services that are not related to Complainant. This is a fraudulent e-mail phishing scheme. Use of a domain name to conduct a phishing scheme may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Therefore, the Panel finds that Respondent used the domain name to pass off as Complainant and phish for Internet users’ information and holds that Respondent did not use the domain name in connection with a bona fide offering or fair use under the Policy.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent registered and is using the disputed domain name by attempting to pass off as Complainant in furtherance of an e-mail phishing scheme. Use of a domain name to conduct a fraudulent e-mail phishing scheme may evidence bad faith registration and use under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Microsoft Corporation v. Terrence Green, FA 1661030 (Forum, Apr. 4, 2016)(finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015)(finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii).). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DUKE TRINITY mark. Actual knowledge is demonstrated by the fact that Respondent previously used the domain name to resolve to Complainant’s own website: this was surely done intentionally in furtherance of the e-mail phishing scheme mentioned above. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Therefore, the Panel finds that Respondent registered is using the disputed domain name in bad faith on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <duke-trinity.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 19, 2018
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